IP NEWS

The Patent Prosecution Highway adds a faster lane

15/07/2011

A recent modification of the Patent Prosecution Highway (PPH) has introduced a significant new benefit to applicants. The PPH, first introduced into Canada in 2008, allows applicants to expedite and simplify prosecution of a Canadian patent application if at least some of the claims of the application have been allowed in another participating jurisdiction. Several conditions apply, including the requirement that the Canadian claims be limited to claims that have been allowed in the foreign jurisdiction. Until now, that other jurisdiction was required to be the applicant’s “office of first filing” (“OFF”). A qualifying Canadian application is usually examined within several months of the PPH request and, in most cases, the claims allowed in the other jurisdiction are also allowed in Canada. However, until now, the usefulness of the PPH was limited since one had to wait until the application was allowed in the OFF.

A new procedure, called the “PPH Mottainai Pilot” was introduced on July 15, 2011 as a pilot project involving 8 patent offices (four of which reciprocate with Canada). Under this new procedure, an applicant can apply for the PPH in Canada if claims have been allowed in any one of the United States, Japan, Spain or Finland, whether or not this country is the OFF. The recognition is mutual, such that an applicant is entitled to request PPH in any of these four countries if claims have been allowed in Canada.

“Mottainai” is a Japanese term meaning “a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized”. In this case, the “waste” was the loss to the applicant and the waste of patent office resources if the OFF did not conclude prosecution of an application in time to enter the PPH in other countries.

The expanded PPH opens the door to new strategies. For example, one could file an application in Canada (such as a national phase of a PCT application) and request a “special order”. This order, which is relatively easy to obtain, significantly expedites prosecution and can result in an allowance of the Canadian application in less than one year. Based on the Canadian allowance, the applicant can then request the PPH for corresponding applications in the USPTO and JPO (as well as Spain and Finland), thereby simplifying and expediting prosecution in these jurisdictions. For savvy applicants, Canada can be the lynchpin of a patent strategy for several key jurisdictions.